Syllabus, Patent Prosecution
Course no. LAWS 4707, Spring 2014, three credits
Prof. Carl Oppedahl
Version: January 9, 2014
Course description. Patent Prosecution will take up a dozen or so advanced topics in patent law. These will probably include claim drafting, international patent applications, opinion letters, remedies in patent cases, security interests, patentability of software, and patentability of genetic sequences. While Patent Law is not a formal prerequisite for this course, students who have not taken Patent Law should be prepared to do extra reading as needed in the first few weeks to familiarize themselves with the basic concepts of patent law.
Who should take this course? This course is chiefly intended for those who are considering making a career in patent law. Most such students will have an undergraduate degree in a technical field, qualifying them to sit for the Patent Bar Exam (see requirements). This course will not assume that the student has technical training in any particular area, but some classroom discussion topics will draw upon a basic math and science background.
About the professor. Carl Oppedahl is a practicing lawyer in Summit County, Colorado. He is a partner in the firm of Oppedahl Patent Law Firm LLC. You can read more about him at the firm's web site.
Cancellations and make-up classes. Prof. Oppedahl is a practicing attorney with his office in Summit County, at some distance from the Law School. There is thus the possibility of class cancellations with little advance warning due to client needs or due to blizzards, in which case students should be prepared to attend make-up classes.
Course materials. There is no commercial casebook for this course. Students will be expected to obtain the Patent Act (35 US Code), the Patent Rules (portions of 37 CFR), the Paris Convention, and the Patent Cooperation Treaty, all of which can all be found free of charge on the Web or can be purchased in law school book stores. These items are voluminous and students may find it workable to read them online and to print out only the pages that are needed for a particular class. In addition, there will be numerous duplicated course materials, most of which can be downloaded instead from the Oppedahl Patent Law Firm LLC web site at http://www.oppedahl.com.
Meeting place. TBA
Final exam. TBA
Meeting time. The course is presently scheduled to meet Tuesdays 6:00-8:30 PM. I will ask the students whether their schedules may permit occasionally staying later for makeup times in case bad weather or other events cause course cancellations.
Attendance and grading. There will be a final exam and students may be asked to do a short writing assignment. There may also be "pop" quizzes, which may or may not count toward the course grade, if I am not sure everybody is doing all the readings. Students should appreciate that this is an advanced course with no commercial casebook text and no commercial outlines to fall back upon; it is difficult to imagine doing well in the course without regular study, attendance, and class participation. Thus, while classroom attendance will probably not be an explicit part of the class grade, it is likely that missing class will result in a poorer grade in the class.
Use of the Internet. This syllabus, updates to the syllabus, and other course announcements will be available on the World Wide Web at http://www.oppedahl.com/apl/. Students in the class will be urged to subscribe to an email discussion list as described below. Prof. Oppedahl's email address is . Most of the course materials will be available via download from the http://www.oppedahl.com web site, but some materials require Acrobat Reader to read and print them. You can obtain Acrobat Reader from http://www.adobe.com/prodindex/acrobat/readstep.html.
Email discussion list. Students in Patent Prosecution are strongly urged to subscribe to the Patent Prosecution email discussion list server. To subscribe or to unsubscribe or to learn how to post messages, go to this page.
Between now and the first day of class, this list server will also serve those who wish to be kept up to date as this syllabus is finalized. If you would like to be notified as this syllabus gets finalized, please subscribe to the list server. You can always unsubscribe later.
Students who have previously taken a patent law course should review their notes from that course prior to the first class, and should be prepared to re-review their notes from time to time during the semester, since the topics covered in Patent Prosecution build upon concepts learned in Patent Law.
To do before the first class. Students should obtain the materials listed below for the first day of class, prior to the first day of class, from this web site. Students should study the materials prior to the first day of class.
Course outline. What follows is an approximate outline of the topics to be covered in the course. Students should be prepared for the possibility of changes due to topics taking more or less time than expected. Changes might also be prompted by important court decisions or rulemaking under the America Invents Act. Students should feel free to speak up regarding particular advanced topics they would like to suggest for discussion toward the end of the course if the syllabus is finished with time to spare.
Class 1. January 14. Review of some patent fundamentals. Pick up a copy of U.S. Pat. No. 5,448,226 from the US Patent Office web site, or download it from http://pdfs.oppedahl.com/US/5448226.pdf, and print it and read it. Be prepared to discuss the various parts of the patent and why they are present. Identify the independent claims, and the dependent claims. Which claims are method claims, and which are apparatus claims? Compare claims 1 and 19 and be prepared to discuss why both claims are in the patent. Also print out and review OG-Notices and Technology Centers. Optionally, go to the World Intellectual Property Organization and click on "Oppedahl" for a fifteen-minute video about the Patent Prosecution Highway.
Class 2. January 21. America Invents Act. Watch the first 54 minutes or so (the "Hiram Bernstein" portion) of the USPTO lecture about AIA. Print out the study materials ahead of time so that you can refer to them during the lecture. Print out the check-the-box flowchart. Be prepared to discuss the "old 35 USC section 102" and the "new 35 USC section 102".
Class 3. January 28. Claim construction. Pick up Sage Prods. Inc. v. Devon Indus. Inc. 880 F.Supp. 718, 35 USPQ2d 1321 and read it. The figures are quite important. (I have placed a PDF of the case on the web site but it is not very good, some of the figures seem to be missing or cut off.) What patents are being asserted, and against which products? Who owns the patents and who makes the products? It will be helpful to draw a picture. Be prepared to explain in detail, for each claim and each product, how the claim elements are (or are not) found in the product. Again, drawing pictures will be helpful.
Class 4. February 4. Information disclosure statements, powers of attorney, inventor's oath or declaration, assignments, indemnification clauses in contracts. Read the following materials and be prepared to answer questions about these materials. Here is a rules excerpt containing the rules cited below.
Class 5. February 11. Patent marking and a bit of best mode. Read the Trim-Tex case. Pick up Patent Marking of Systems, 11 Santa Clara Computer & High Technology Law Journal 205 (1995) and read it. Also read 35 USC § 287. The article discusses the importance of marking one's product with one's patent number. But what if one does not make products, but merely owns a patent -- what are the consequences of their not having a product to mark? Read 35_USC § 112 with particular attention to the "best mode" requirement. Finally, read §§ 15 and 16 of the America Invents Act. Be prepared to answer the question "what are the consequences of failure to disclose the best mode?"
Look at how AIA Section 15 affects 35 USC § 119 and 35 USC § 120. What exactly is Congress trying to accomplish with the changes to Sections 119 and 120 of 35 USC?
Class 6. February 18. Examination guidelines in biotech patent law. Pick up Synopsis of Application of Utility Guidelines with Examples from http://www.uspto.gov/web/offices/com/sol/og/1995/week34/patutil.htm and read it. Read/review 35 USC 101. Be prepared to discuss how the Guidelines (which were issued in 1995) differ from previous Patent Office practices.
Class 7. February 25. Patenting software I - is it patentable subject matter? Read Interim Guidelines for Examination of patent Applications for Patent Subject Matter Eligibility at http://www.uspto.gov/web/offices/com/sol/og/2005/week47/patgupa.htm.
Patenting software II - the patent application. Read 35 USC 112 at http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_112.htm. Print out Deposit of copies and phonorecords for copyright registration (37 CFR 202.20 available at http://www.bitlaw.com/source/37cfr/202_20.html) and read it, particularly the portion (part (c)(vii)). Consider reasons why one might include executable code, source code, flowcharts, or portions of these, in a patent specification. Contrast with the deposit requirements for copyright.
The remaining classes will be scheduled in more detail, and reading assignments set, as we find out how the class is progressing. Here is a tentative list of topics.
Class 8 and 9. March 4 and March 11. The Paris Convention. Some readings from the text of the Convention, which may be found at http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html. Particularly you should read Article 4 very, very closely.
Please try to do homework problems prior to class.
The Patent Cooperation Treaty. Some readings from the text of the Treaty, which may be found in HTML and PDF. If you have not already done so, obtain a WIPO cryptographic certificate. Once you have the WIPO cryptographic certificate, if you have not already done so, create an ePCT account for yourself. When that is done, log in at the ePCT system and request an e-handshake from me (my customer ID is "user_US_OPPEDAHL_CARL_2526").
No class March 18 due to Spring Break.
Class 10. March 25. Attorney opinion letters relating to wilful infringement. Westvaco Corp. v. International Paper Co., 991 F2d 735, 26 USPQ2d 1353 (CA FC 1993); and Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMBH v. Dana Corporation, and Haldex Brake Products Corporation, and Haldex Brake Products AB, U.S. Court of Appeals for the Federal Circuit, 01-1357, -1376, 02-1221, -1256.
Class 11. April 1. Security interests and patents. 35 USC § 261 and 37 CFR § 1.12. Print out MPEP Chapter 300 and read it and think about it, with particular attention to cover sheets and section 313.
Class 12. April 8.
Design patents. Read Egyptian Goddess and Hupp v Siroflex. With Hupp v. Siroflex, you only need to read the design patent part, the second part of the case about trade dress will not be gone into.
Also read Richardson v Stanley Works and Vanguard.
Class 13. April 15. Read:
Class 14. April 22. Read Univ. of Rochester v. G.D. Searle & Co. et al. (W.D.N.Y. 2003), the Pacer record, and U.S. Pat. No. 6,048,850.